Noelle-Ann Sunstrum and Jean Payette v Brian Timothy Boland - [2003] APO 16

OFFICIAL NOTICE
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Application : No. PR4630 in the name of Noelle-Ann Sunstrum and Jean Payette

Title: Compact Disk Tension Loading System

Action: Requests under sections 32 and 36 of the Patents Act 1990 by Brian Timothy Boland

Decision: Issued 10 April 2003.
Abstract

The provisional application had lapsed therefore section 32 was no longer applicable.
The legal burden of proof was on the section 36 applicant. The section 36 applicant had put forward a credible prima facie case that he was the inventor. There was therefore an evidentiary burden on the patent applicants to establish their claim to be the inventors of the invention. They had not discharged this burden. On the balance of probabilities, the section 36 applicant was the inventor of the invention described in the provisional specification.
Discretionary aspects of section 36 - opinion expressed that it would seem pointless making a declaration under section 36 if there was no patentable subject matter. However, no conclusion was reached on the patentability of the invention.
A declaration was made under section 36 that the section 36 applicant was an eligible person.
Costs awarded against the patent applicants. Thomas & Stohrv Chappell & Yates [1993] APO 6 (28 January 1993) applied in relation to allowable costs.
PATENTS ACT 1990
DECISION OF A DELEGATE OF THE COMMISSIONER OF PATENTS
Re:Patent Application No. PR4630 by Noelle-Ann Sunstrum and Jean Payette; and requests under sections 32 and 36 of the Patents Act 1990 by Brian Timothy Boland

BACKGROUND

Noelle-Ann Sunstrum and Jean Payette (“the applicants”) filed provisional patent application PR 4630 for an invention entitled “Compact Disk Tension Loading System” on 24 April 2001. On 13 July 2001, Brian Timothy Boland (“the requestor”) filed a request under section 32 for determination of a dispute and an application for a declaration under section 36. Mr Boland’s basis for these requests was that he was the inventor and therefore entitled to the grant of a patent for the invention.
The provisional application PR 4630 has now lapsed not open to public inspection.
Mr Boland had previously filed provisional application PR1255 for an invention entitled “Cases and Carriers for CD Disks” on 7 November 2000. He subsequently filed international application PCT/AU01/01433 (AU 23267/02), claiming priority from PR 1255. The international application became open to public inspection on 16 May 2002.
Mr Boland also filed provisional application PR 4654 for an invention entitled “Cases and Carriers for CD Discs” on 30 April 2001. PR 4654 has lapsed not open to public inspection.
The current action is only in relation to the Sunstrum and Payette application, PR 4630. The Boland applications are only relevant in that they are directed to related subject matter.
When Mr Boland first filed his requests under sections 32 and 36, he was represented by a patent attorney. At the time Boland made his requests, he also requested the Commissioner allow inspection of PR 4630 under section 56(1)(b). The Commissioner agreed to grant access to PR 4630, but only to the requestor’s legal representative and only on the basis that certain undertakings in regard to confidentiality were given. Before access was granted, the attorney advised the Commissioner that they were no longer acting for Mr Boland. The Commissioner advised the parties that access to the provisional application would not be given to anyone other than a legal representative of the parties. As Mr Boland chose to represent himself, he was not given access to the provisional application.
As the basis for the request under section 32 and the application under section 36 was identical, the matters were combined. Both parties were given an opportunity to file evidence supporting their respective cases. Once the supporting evidence was filed, the evidence was exchanged and the parties each filed evidence in response.
The matter was set for hearing in Canberra on 26 November 2002. Mr Boland attended the hearing representing himself. Dr's Sunstrum and Payette advised that they did not wish to appear at the hearing either in person or by telephone.
Relevant Law
Section 32 of the Patents Act 1990 reads:
32. If a dispute arises between any 2 or more interested parties in relation to a patent application whether, or in what manner, the application should proceed, the Commissioner may, on a request made in accordance with the regulations by any of those parties, make any determinations the Commissioner thinks fit for enabling the application to proceed in the name of one or more of the parties alone, or for regulating the manner in which it is to proceed, or both, as the case requires.
Section 32 provides a mechanism for the Commissioner to determine whether, or in what manner, the application should proceed. In the present case, the application has lapsed. Therefore there is no further basis for considering how the application should proceed and section 32 is no longer available in the present case.
Section 36, on the other hand, allows the Commissioner to make a declaration whether or not the patent application lapses or is withdrawn (sub-section 36(2)). Section 36 enables a person to make an application that the nominated person is not an eligible person but that some other person is an eligible person. The onus is on the person making an application under section 36(1) to clearly establish eligibility to the Commissioner’s satisfaction.
Therefore the legal burden of proof in this matter rests with the section 36 applicant. In the present case that is Mr Boland. However, the evidentiary burden may shift according to the state of the evidence from time to time. This will depend on the circumstances of the case and the likelihood of the facts being within the knowledge of, or more readily available to, one side or the other. (Dunlop Holdings Ltd’s Application [1979] RPC 523).
Further, the Commissioner is not bound by the rules of evidence but is entitled to act on any material that is “logically probative” of the issues under decision. The standard of proof required is the normal standard of proof required in civil litigation, that is the balance of probability (Dunlop Holdings Ltd).
Evidence and Credibility
Both parties filed evidence in support and evidence in response. Much of the evidence filed by both parties was not in the form of statutory declarations, as required by regulation 22.12. I believe this may be due to the fact that both parties were self-represented and unfamiliar with the requirements of the regulations. Nonetheless, such evidence generally carries much less weight than evidence in the form of statutory declarations. However, in the present case, both parties are in the same boat, with evidence being a mixture of declarations and “facts” presented in the form of letters or undeclared statements.
I do not draw any adverse inferences from the failure of the applicants to attend the hearing. They may have decided against attending for any variety of reasons. However, Mr Boland made a number of submissions at the hearing pointing to a lack of credibility of the applicants’ evidence. By deciding not to attend the hearing, the applicants gave up the right of reply to these submissions.
DECISION
In Row Weeder Pty Ltd v Nielsen and Others 39 IPR 400 the delegate considered a number of earlier decisions of the Commissioner and said the common theme from these was that a person has entitlement to an invention if that person's contribution, either solely or jointly with others, had a material effect on the invention. This approach has been approved by the Administrative Appeals Tribunal in Upham v Commissioner of Patents and Another ([1998] AATA 852).
In arriving at this approach, the delegate in Row Weeder gained guidance from a number of decisions, including Harris v CSIRO 26 IPR 469:
"The Harris v CSIRO decision (sic) (26 IPR 469) decision puts forth a number of questions to consider. These are-: (1) what the invention(s) is/are of the person making the Section 36(1) request; (2) what the invention(s) disclosed in the specifications is/are of the person who made the patent application; and (3) whether one person has any rights in the invention of the other, and vice versa. The decision also suggests a more significant question of whether the invention would have occurred without a particular person's involvement."
The Boland inventions
Mr Boland’s inventions relate to CD trays for supporting and releasably retaining CDs in a standard single CD case (so-called “jewel” cases). The invention allows multiple CDs to be enclosed within a single case. A number of pivotal trays are designed to fit within a standard size jewel case. When the case is opened, the trays pivot to positions away from the case from where the CDs can more easily be removed. This pivoting arrangement is described in detail in the provisional application PR 1255, which is now open to public inspection. The present dispute does not involve this pivoting arrangement. Rather, the dispute involves the actual trays and the means by which they hold and release CDs.
The trays described in PR1255 have a centre flexural member and a rear flexural member located near the bottom of the tray. The two flexural members are described as being resiliently biased towards each other. The tray releasably holds a CD by pressing the outer diameter edge of a CD against the rear flexural member and forcing the centre hole of the CD over the centre flexural member. Boland referred to this arrangement in his evidence as “CD tray#1”. A CD case that is apparently a prototype of CD tray#1 was filed in evidence by the patent applicants.
Boland’s provisional application PR 4654 filed on 30 April 2001 describes the same pivoting arrangement and tray as disclosed in the earlier provisional. However, it also includes an alternative tray to that described in PR 1255. The alternative tray does not engage the central hole of a CD. Instead, it engages and holds the outer diameter edge of a CD. In this arrangement a CD can more easily be slid into the tray. Mr Boland referred to this tray as “CD tray#2”. This mechanism is very similar to the arrangement of the disk holder described in the provisional application in dispute, PR 4630. Boland’s provisional application was filed only 6 days after the applicants' provisional application.
According to Boland’s evidence, he had decided that the performance of CD tray#1 was unsatisfactory and had decided to redesign it to allow “slide in” loading of CDs rather than “press down over centre hub” loading. The fact that Boland considered the CD tray#1 design problematic and had thought of the concept of a slide in arrangement is corroborated by declaratory evidence by Michael Welsh, a Toolmaking Engineer. Welsh declares that Boland had called him on 11 November 2000 and informed him of difficulties with the tray. According to Welsh, Boland "said he needed to redesign it to quote: "allow people to slide the CD's in"."
Mr Boland states that he designed and developed the new “slide in” tray (CD tray#2) between February and April 2001. He states he built and tested a finished working prototype in the first week of April. Mr Boland has provided corroborating statutory declarations from a number of people (including academic colleagues of Dr Payette) who declare that Boland had confidentially shown them the prototype on 19 April 2001. Mr Welsh also declares that he was aware Boland had been drafting a new provisional specification to incorporate the new tray for same weeks beforehand.
The invention disclosed in the specification of PR 4630
The provisional specification filed by Payette and Sunstrum describes a compact disk loading system. The system has a CD disk holder into which a CD slides. In this system, a CD can be slid into place by a gentle push and then held in place under tension.
I note that although provisional application PR 4630 is filed in the joint names of Noelle-Ann Sunstrum and Jean Payette, Sunstrum is named on the Patent Request as the sole inventor of the invention. This is contradicted by the applicant's evidence in support, which states that Payette and Suntrum are the inventors of the invention described in PR 4630. In the evidence in response, Payette states that he conceived the idea and that he built a prototype and "enjoyed many helpful discussions and feedback from (his) wife (Sunstrum) concerning the novel design." Payette then declares that he is the true inventor of the invention described in PR 4630. Despite what is stated on the patent request, there is no evidence to establish or even suggest that Sunstrum is the sole inventor. The applicants' own evidence suggests that at best, Sunstrum played only a minor role in the invention.
There is very little evidence from the applicants regarding the development of the invention described in PR 4630. The applicants' evidence in response includes 3D modelling images of a CD rack for holding numerous CDs. Although Payette declares he showed these drawings to Boland on 9 March 2001, there is no way of verifying from the illustrations when they were created or if they have been modified since being first created.
The illustrated rack holds CDs in channels that allow a CD to be slid into place. It is not apparent from the drawings that there is any tension or "over-centre" mechanism to hold the disks in place. In fact, the illustrations appear to me to show a simple semi-circular channel in which a CD can slide freely in and out. There is no evidence as to how or when the applicants conceived the idea of the tension loading mechanism.
Further, although this evidence suggests Payette may have been developing a CD rack, the provisional patent appears to be directed to holders for CD cases such as jewel cases. While it is open to the applicants to describe their invention broadly if the CD holders may be used in cases as well as racks, I note that none of the drawings in the provisional specification appear to represent the CD rack illustrated in the 3D images. This development or change in emphasis from CD racks to holders for cases has not been explained in evidence.
Rights to the invention disclosed in PR 4360
Brian Boland is a managing director of Wes-tec Research & Future Products Pty Ltd ("Wes-tec"), a company formed to develop and exploit Boland's CD storage products. Jean Payette was an employee of Wes-tec during 1999. According to the evidence, Payette maintained an "academic interest" in Boland's R&D activities after his employment for Wes-tec ceased. Boland states that he "freely discussed all details of the project" with Payette on the basis of strict confidentiality.
In January 2001, Boland gave Payette a prototype copy of his CD tray#1. Boland allegedly told Payette that the tray needed to be redesigned to allow CDs to slide into the tray rather than be pressed down on a boss at the centre of the disk. Boland states that he had given the prototype to Payette to get some feedback on the design, though no feedback was received. I understand this is the prototype filed in evidence by Payette and Sunstrum.
In his evidence in support, Boland states:
"Although I have not seen the content of PR4630 or viewed any tangible manifestation of it I have good reason to believe that the subject matter of PR4630 and it's substance was derived from numerous disclosures I made to Payette in circumstances that clearly imported an obligation of confidence and in one instance on 9 March 2001 I made an explicit confidential disclosure to Payette of my invention I believe is described in PR4630."
Boland states that on 9 March 2001 he confidentially disclosed his new concept to Payette and sketched and explained the over-centre concept that retained the CD at its edge allowing the CD to slide into the tray.
The patent applicants make no mention of the 9 March 2001 meeting in their evidence in support. In fact, Payette states that he had no contact with Boland for 8 or 9 months. Payette states that he received a phone call from Boland in April 2001. Payette states:
"During a discussion on the phone in April at 8pm Brian disclosed his idea to me. I told him I lodged a few days ago a provisional application. He asked me what it was and I told him that it was confidential and that I will not disclose my invention to him."
Boland also refers to this phone call as the first time he became aware that Payette and Sunstrum had filed a provisional application. Boland states that at first he thought Payette was joking so he phoned Sunstrum. Boland alleges that Sunstrum confirmed the application had been filed and suggested that Boland negotiate with Payette.
Payette's evidence in support that he had no contact for 8 or 9 months is contradicted by his evidence in response, in which Payette refers to "many months of persistent harassment" and the "relentless persistence" of Boland to view Payette's latest designs. Payette also acknowledges in his evidence in response that Boland did come to his home on 9 March 2001. Contrary to his evidence in support, Payette states that he disclosed his design to Boland at this meeting. Payette states:
"The sketches that Boland refers to in his evidence … are those that he quickly sketched for himself having copied them from my computer screen."
As noted above, the applicants' evidence in response includes illustrations of a CD rack for holding numerous CDs. Payette states that the design shown in the illustrations was the concept used to launch the design described in provisional patent application PR 4630. He states that despite several phone calls from Boland during April, he did not disclose his new CD rack concept.
It is difficult to reconcile these statements with the submission that he disclosed his design to Boland on 9 March 2001. I can only assume that what Payette is attempting to say is that he showed Boland a design on 9 March 2001 then carried out further development prior to filing the provisional application on 24 April 2001. Further confusing the issue, however, is Payette's declaration that:
"I believe that Brian Boland bridged our confidentiality agreement of 9 March 2001 and appropriated my ideas and concepts for his private purposes and benefits."
The evidence is unclear and contradictory as to exactly what Payette believes he disclosed to Boland and what he kept confidential from Boland.
There appears, now at least, to be agreement between the parties that Boland visited Payette on 9 March 2001 and that Boland made some sketches. Those sketches no longer exist. Boland states that he threw them out when he returned to his home office, as he did not consider they warranted keeping. There also appears to be agreement that whatever discussions took place were confidential. The parties depart in that Payette alleges that Boland made sketches of Payette's design, whereas Boland alleges he made sketches to illustrate the concept of the over-centre retention means he was describing to Payette.
In my view, the balance of probabilities favours Boland's version of events over Payette's. Boland has a background in designing CD holders and his evidence sets out a logical progression by which he arrived at the invention. This is backed by declaratory evidence from a number of engineers and academics. He also sets out evidence, corroborated by others, that he regularly communicated developments in his designs to Payette on a confidential basis. Payette's evidence, on the other hand, tends to be vague and contradictory. There is no or little evidence of the design process he went through or how he arrived at the concept of the invention.
I also note that, despite the fact that Boland has not seen a copy of the provisional patent application, he has consistently and accurately been able to describe the mechanism set out therein. This is also despite the repeated assertions from Payette that he refused to disclose to Boland the invention in the provisional patent.

The applicants' initially put a case that their mechanism is different to Boland's and any similarities are coincidental. In a letter to the Commissioner dated 31 July 2001, the applicants stated:
"After working independently for some time, it is conceivable that Mr Boland and Mr Payette arrived at similar improvements to commercially available CD racks."
In their evidence in support, the applicants have made reference to two US patents: US 5,584,397; and US 5,593,032 (also referred to in evidence as US Application 409357). Both of these patents describe slide in CD holders of the type disclosed in PR 4630. Mr Payette states in evidence in support:
"Only two options are possible to secure a CD; either by the center hole or by the edges of the CD. So lots of different possibilities exist to secure a CD from the center hole or to secure a CD by the edge. The description will have lots of similarity depending of the way of securing a CD but for each case the mechanism will vary from one design to another design."
It appears that the applicants have referred to the US patents to illustrate their point that there are limited options to secure CDs by the edge and that this may explain any similarities between their provisional patent and Boland's provisional patent. There is no suggestion in the evidence that Payette and Sunstrum were aware of the US patents prior to filing the provisional application. It is not clear from the evidence how and when the applicant's became aware of the US patents. Whatever the reasons are for referring to these documents in the evidence, in my view the US patents cast considerable doubt over the novelty of the invention disclosed in PR 4630.
I note that there are some differences between the device in PR 4630 and that described in Boland's specification. Boland explains that the differences over what he disclosed to Payette are developments required to overcome practical difficulties relating to tooling. The nature of the improvements supports this argument. In my view, the concept employed is very similar.
Given the relationship between the parties that had existed over a number of years and the available evidence, I think it unlikely that each party independently arrived at similar improvements to CD holders.
CONCLUSION
I consider that Mr Boland has discharged the onus on him to establish eligibility under section 36. He has provided evidence that, on the balance of probabilities, establishes that he came up with the concept described in provisional patent PR 4630 and disclosed this invention to Dr Payette. In the face of a prima facie credible case that Mr Boland was the inventor, there was an evidentiary burden on the patent applicants to establish their claim to be the inventors of the invention. The patent applicants have not discharged this evidentiary burden. As I have stated above, the balance of probabilities favours the requestor's version of events over the applicants.
I therefore find that Mr Boland conceived the idea and communicated the concept to Dr Payette. I find, on the available evidence, that Mr Boland is the inventor of the invention described in provisional patent application PR 4630. Mr Boland is therefore entitled to the invention disclosed in PR 4360.
As the application has lapsed, I make no determination under section 32.
DECLARATION
Section 36 confers a discretionary power on the Commissioner, namely "the Commissioner may declare in writing that the person who the Commissioner is satisfied are eligible persons are eligible persons in relation to the invention as so disclosed." Therefore I need to consider if it is appropriate to make such a declaration.
I have noted in my decision that I have some doubts about the novelty of the invention. In my view, it would seem pointless making a declaration under section 36 if there was no patentable subject matter. However, the patentability of the invention has not been subjected to any rigorous scrutiny and there may possibly be novel subject matter in the embodiments. Therefore I do not believe this weighs against making a declaration. There appear to be no other reasons not to make a declaration.
Therefore, I declare that:
· Brian Timothy Boland is an eligible person; and

· The nominated persons, Noelle-Ann Sunstrum and Jean Payette, are not eligible persons
under section 36 of the Patents Act 1990 in relation to the invention disclosed in provisional patent application PR 4630.
I note that the timing provisions for filing an application under sections 29 and 36(4) in these circumstances are determined by regulation 3.8(d). That is, if Mr Boland wants to file a complete application for the invention described in PR 4630, he must do so within 3 months of the date of this decision.
COSTS
The Commissioner has the power to award costs against a party where there are proceedings before the Commissioner (section 210). Any costs awarded by the Commissioner against a party are recoverable as a debt (section 211).
It is possible that as the application had lapsed, the applicants were no longer interested in defending their case. However, by way of letter to the Commissioner dated 31 July 2001 the applicants confirmed that they wished to defend their entitlement as inventors of the invention. They have not subsequently advised that they no longer wish to defend their entitlement. Therefore, although they were not represented at the hearing, I consider they are still actively involved in the matter and an award of costs is appropriate.
The costs that may be awarded are those set out in Schedule 8 of the Patent Regulations. This matter relates to section 32 and section 36 determinations rather than to an opposition. Also, the parties did not have legal representation. It is therefore not appropriate in the present circumstances to award any of the costs in Part 1 of Schedule 8 (See Thomas & Stohrv Chappell & Yates [1993] APO 6 (28 January 1993)).
The usual practice in actions before the Commissioner is for costs to follow the event. I see no reasons to vary that practice in the present case. Therefore I award costs against the applicants, Noelle-Ann Sunstrum and Jean Payette. The costs awarded are those set out in items 1 and 2 of Schedule 8, Part 2 of the Patent Regulations.
Brendan Bourke
Delegate of the Commissioner of Patents